B.E. Tech., L.L.C. v. Google, Inc., 2015-1827

• Decision Date: 17 November 2016
• Docket Number: 2015-1828,2015-1829,2015-1879,2015-1827
• Citation: B.E. Tech., L.L.C. v. Google, Inc., 2015-1827, 2015-1828, 2015-1829 (Fed. Cir. Nov 17, 2016)
• Parties: B.E. TECHNOLOGY, L.L.C., Appellant v. GOOGLE, INC., MATCH.COM LLC, PEOPLE MEDIA, INC., Appellees B.E. TECHNOLOGY, L.L.C., Appellant v. MICROSOFT CORPORATION, GOOGLE, INC., Appellees B.E. TECHNOLOGY, L.L.C., Appellant v. FACEBOOK, INC., GOOGLE, INC., MATCH.COM LLC, PEOPLE MEDIA, INC., Appellees
• Court: U.S. Court of Appeals — Federal Circuit

B.E. TECHNOLOGY, L.L.C., Appellant v. GOOGLE, INC., MATCH.COM LLC, PEOPLE MEDIA, INC., AppelleesB.E. TECHNOLOGY, L.L.C., Appellant v. MICROSOFT CORPORATION, GOOGLE, INC., AppelleesB.E. TECHNOLOGY, L.L.C., Appellant v. FACEBOOK, INC., GOOGLE, INC.,MATCH.COM LLC, PEOPLE MEDIA, INC., Appellees

2015-1827

2015-1828

2015-1829

2015-1879

United States Court of Appeals for the Federal Circuit

November 17, 2016

NOTE: This disposition is nonprecedential.

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2014-00038, IPR2014-00699.

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2014-00039, IPR2014-00738.

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2014-00052, IPR2014-00053, IPR2014-00698, IPR2014-00743, IPR2014-00744.

ROBERT E. FREITAS, JASON S. ANGELL, Freitas Angell & Weinberg LLP, Redwood City, CA, argued for appellant. Also represented by DANIEL J. WEINBERG.

ANDREW JOHN PINCUS, Mayer Brown LLP, Washington, DC, argued for all appellees as to 15-1827. Google, Inc. also represented by BRIAN ROSENTHAL, PAUL WHITFIELD HUGHES, CLINTON BRANNON.

MICHAEL SUMNER. FORMAN, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor Michelle K. Lee as to 15-1827. Also represented by THOMAS W. KRAUSE, SCOTT WEIDENFELLER, KAKOLI CAPRIHAN.

JEFFREY PAUL KUSHAN, Sidley Austin LLP, Washington, DC, argued for all appellees as to 15-1828. Microsoft Corporation also represented by SCOTT BORDER, SAMUEL DILLON, RYAN C. MORRIS, ANNA MAYERGOYZ WEINBERG.

HEIDI LYN KEEFE, Cooley LLP, Palo Alto, CA, argued for all appellees as to 15-1829, 15-1879. Facebook, Inc., also represented by MARK R. WEINSTEIN; ORION ARMON, PETER SAUER, Broomfield, CO.

JASON ALEXANDER ENGEL, K&L Gates LLP, Chicago, IL, for appellees Match.com LLC, People Media, Inc. Also represented by KACY DICKE.

Before LOURIE, CHEN, and STOLL, Circuit Judges.

CHEN, Circuit Judge.

B.E. Technology, L.L.C. (B.E.) appeals from three final written decisions of the U.S. Patent and Trademark Office, Patent Trial and Appeal Board (Board), across nine inter partes reviews (IPRs), in which the Board found unpatentable claims 11-22 of B.E.'s U.S. Patent No. 6,628,314. See Google, Inc. v. B.E. Tech., LLC, Nos. IPR2014-00038, IPR2014-0069, 2015 WL 1735099, at *1 (P.T.A.B. Mar. 31, 2015) (Google Written Decision); Microsoft Corp. v. B.E. Tech., LLC, Nos. IPR2014-00039, IPR2014-00738, 2015 WL 1735100, at *1 (P.T.A.B. Mar. 31, 2015) (Microsoft Written Decision); Facebook, Inc. v. B.E. Tech., LLC, Nos. IPR2014-00052; IPR2014-00053, IPR2014-00698, IPR2014-00743, IPR2014-00744, 2015 WL 1735098, at *2 (P.T.A.B. Mar. 31, 2015) (Facebook Written Decision). Because the above-captioned appeals all address overlapping claims of the '314 patent, we address them in a single opinion, and we affirm, for the reasons stated herein.¹ We agree with the Board that claims 11-22 of the '314 patent are unpatentable based on anticipation by U.S. Patent No. 6,119,098 (Guyot) and obviousness in view of Guyot, U.S. Patent No. 5,918,014 (Robinson), and How to Use Anonymous FTP, IAFA Working Group, 1-13 (May 1994) (RFC 1635). Microsoft Written Decision at *4-14. We also affirm the Board's denial of B.E.'s contingent motion to amend. Id. at *16-17. Because we affirm based on Microsoft's petition, we do not address the merits of Google's and Facebook's parallel petitions and dismiss them as moot.²

BACKGROUND

The '314 patent relates to user interfaces that provide advertising over a global computer network such as the Internet. See '314 patent col. 1, ll. 12-16. It describes a client software application comprising a graphical user interface (GUI) and an advertising and data management(ADM) module. Id. col. 6, ll. 64-67. The GUI comprises a first region comprising a number of user-selectable items and a second region comprising an information display region, which includes banner advertisements. Id. col. 4, ll. 24-37. To target a user with advertisements, program modules in the GUI collect statistical data based on the user's activity within the GUI. Id. col. 4, ll. 43-51.

When a user first accesses the client software application, the user enters demographic information into a form, which is used in selecting advertising to be displayed to the user. Id. col. 8, ll. 57-62, col. 16, l. 60 - col. 17, l. 2. The ADM server checks the form's completeness, assigns a unique identification (ID) to the user, and stores the unique ID with the user's demographic information. Id. col. 6, l. 67, col. 16, l. 60 - col.17, l. 15. The user's computer downloads the client software application, which then monitors and reports to the ADM server the user's activity, and displays advertising banners to the user based on the user's input or activity at periodically timed intervals. Id. col. 12, ll. 55-59, col. 14, ll. 40-46, col. 17, ll. 17-23.

I. Representative Claim

Claim 11 is representative and is reproduced below:

11. A method of providing demographically-targeted advertising to a computer user, comprising the steps of:

providing a server that is accessible via a computer network,

permitting a computer user to access said server via said computer network,

acquiring demographic information about the user, said demographic information including information specifically provided by the user in response to a request for said demographic information, providing the user with download access to computer software that, when run on a computer, displays advertising content, records computer usage information concerning the user's utilization of the computer, and periodically requests additional advertising content,

transferring a copy of said software to the computer in response to a download request by the user,

providing a unique identifier to the computer, wherein said identifier uniquely identifies information sent over said computer network from the computer to said server,

associating said unique identifier with demographic information in a database,

selecting advertising content for transfer to the computer in accordance with the demographic information associated with said unique identifier;

transferring said advertising content from said server to the computer for display by said program,

periodically acquiring said unique identifier and said computer usage information recorded by said software from the computer via said computer network, and

associating said computer usage information with said demographic information using said unique identifier.

Id. col. 22, l. 41 - col. 23, l. 7 (emphases added). Although numerous petitioners, including Google, Inc., Microsoft Corp., and Facebook, Inc. filed separate IPR petitions against various claims of the '314 patent, we agree with Microsoft that all of the challenged claims are unpatentable based on anticipation by Guyot and obviousness in view of Guyot, Robinson, and RFC 1635. Microsoft Writ- ten Decision, at *1. We briefly review Guyot, Robinson, and RFC 1635, before discussing claim construction, anticipation, obviousness, and B.E.'s contingent motion to amend.

II. Guyot

Guyot describes a system and method for targeting and distributing advertisements over a distributed information network that allows information to be exchanged between a server and multiple subscriber systems. Id. at *6. The server stores and manages an advertisement database, and each subscriber system has a unique proprietary identifier. Id. at *6-7. The subscriber systems periodically access the server to download targeted advertisements based on the server-stored personal profile, before displaying the targeted advertisements to the subscriber. Id. at *6. The subscriber can select a "connection button" to connect to the server, which determines if the latest software version is needed, and if yes, a uniform resource locator (URL) is provided to the subscriber computer, which downloads the software. Id. at *10.

III. Robinson

Robinson describes a system for displaying advertising to users using a cookie stored on the user's computer. Id. at *11. "The cookie contains the identifier of the user, and the user ID in a central database is updated with tracking information from the cookie," which allows the central server to associate information with a user. Id.

IV. RFC 1635

RFC 1635 describes File Transfer Protocol (FTP), a protocol on the Internet for transferring files from one computer host to another. Id. at *12. The user of the FTP program logs into both hosts with a user account and a password. Id. RFC 1635 also describes anonymous FTP, in which an archive site acts as a repository for a wealth of information, akin to a library. Id. To provide general access, a special user account called "anonymous" allows the user to log in using FTP to view and retrieve a limited set of files from the archive site. Id.

DISCUSSION

I. Standard of Review

"We review intrinsic evidence and the ultimate construction of the claim de novo." SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir. 2015). In construing claims, the Board applies the broadest reasonable interpretation. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016). Anticipation is a question of fact. Eli Lilly & Co. v. Bd. of Regents of Univ. of Wash., 334 F.3d 1264, 1267 (Fed. Cir. 2003). "[O]bviousness under § 103 is a question of law based on underlying factual findings." Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016). "We review the Board's conclusions of law de novo and its findings of fact for substantial evidence." Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1337 (Fed. Cir. 2016). Substantial evidence is "such relevant evidence [that] a reasonable mind might accept as adequate." Id.

II. Claim Construction

We begin with claim construction. B.E. appeals the Board's constructions of three claim limitations: "demographic information," "unique identifier," and ...